Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 26
`Entered: September 2, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TIANJIN SHUANGRONG PAPER PRODUCTS CO., LTD. AND
`SHUANG RONG AMERICA, LLC,
`Petitioner,
`
`v.
`
`KISS NAIL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00371
`Patent 8,561,619 B1
`____________
`
`
`
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5, 37 C.F.R § 42.123
`
`
`Tel: 571-272-7822
`
`Paper No. 26
`Entered: September 2, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TIANJIN SHUANGRONG PAPER PRODUCTS CO., LTD. AND
`SHUANG RONG AMERICA, LLC,
`Petitioner,
`
`v.
`
`KISS NAIL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00371
`Patent 8,561,619 B1
`____________
`
`
`
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5, 37 C.F.R § 42.123
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`
`On August 19, 2016, the Board authorized Petitioner, Tianjin
`
`Shuangrong Paper Products Co., Ltd. and Shuang Rong America, LLC, to
`
`file a motion to file supplemental information (the “Motion”). Paper 23, 3.
`
`We instructed Petitioner to file the supplemental information as an exhibit
`
`with the Motion, which we would conditionally enter, pending our decision
`
`on the Motion. Id. Petitioner filed its Motion, along with Exhibit 1017, on
`
`August 25, 2016. Paper 24. Patent Owner, Kiss Nail Products, filed its
`
`opposition to the Motion (“Opposition”) on August 31, 2016. Paper 25.
`
`
`
`Background
`
`On December 29, 2015, Petitioner filed a Petition for Inter Partes
`
`Review of U.S. Patent No. 8,561,619. Paper 1 (the “Petition”). Exhibit
`
`1007 accompanied the Petition and provided an English translation of
`
`Korean patent publication 10-2006-0091440, which was provided as a
`
`Korean-language Exhibit 1006. See Exs. 1006, 1007 (the “Zenon
`
`reference”). Exhibit 1007 included a Certification of Translation affidavit
`
`from Dongshen Wang, who apparently works for Expert Translation Bureau,
`
`LLC. Ex. 1007, 21. We instituted trial on two separate grounds, both of
`
`which included the Zenon reference. Paper 13, 28.
`
`Patent Owner sought to depose Mr. Wang and we authorized the
`
`deposition as part of routine discovery. Paper 19. Upon Petitioner learning
`
`that Mr. Wang would not consent to travel outside China for a deposition,
`
`Petitioner secured an affidavit (the “Affidavit”) of Mr. Kim. Paper 24, 2. In
`
`the Affidavit, Mr. Kim declares that “[b]ased on my knowledge and
`
`expertise, and to the best of my belief, Exhibit 1007 truly and accurately
`
`conveys the meaning and substance of the Zenon reference, subject to” a
`
`2
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`provided clerical error. Exhibit 1017. Petitioner moves to admit the
`
`Affidavit as supplemental information. Paper 24, 1
`
`
`
`Analysis
`
`Our Rule 42.123 covers submitting supplemental information and
`
`provides, in relevant part:
`
`(a) Motion to submit supplemental information. Once
`a trial has been instituted, a party may file a motion to submit
`supplemental information in accordance with the following
`requirements:
`(1) A request for the authorization to file a motion to
`submit supplemental information is made within one month of
`the date the trial is instituted.
`(2) The supplemental information must be relevant to a
`claim for which the trial has been instituted.
`
`
`Late submission of supplemental information. A
`(b)
`party seeking to submit supplemental information more than one
`month after the date the trial is instituted, must request
`authorization to file a motion to submit the information. The
`motion to submit supplemental information must show why the
`supplemental information reasonably could not have been
`obtained earlier, and that consideration of the supplemental
`information would be in the interests-of-justice.
`
`
`Petitioner moves to file supplemental information more than one
`
`month after the date that we instituted trial in this proceeding. Accordingly,
`
`Petitioner has the burden of showing (1) that the information could not
`
`reasonably been obtained earlier and (2) that our admitting the supplemental
`
`information is in the interests of justice.
`
`As to the first prong, we determine that Petitioner could not have
`
`reasonably submitted the information earlier. As Petitioner indicates, it
`
`3
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`learned five days before the one-month date that Patent Owner sought to
`
`depose “declarants” and learned fifteen days later that Patent Owner sought
`
`to depose Mr. Wang. Paper 24, 1. That is, Petitioner learned ten days after
`
`the one-month deadline that Patent Owner wanted to depose Mr. Wang.
`
`Upon learning Patent Owner’s desire to depose Mr. Wang, Petitioner
`
`attempted to secure the deposition and, when it realized that Mr. Wang
`
`would be unavailable for a deposition, secured the services of Mr. Kim to
`
`testify to the accuracy of Exhibit 1007. Id. at 1–2. The period for Patent
`
`Owner discovery has not expired.
`
`Patent Owner asserts that Petitioner should have secured Mr. Wang’s
`
`availability for a deposition when it obtained his translation and, if Petitioner
`
`could not secure this availability, then Petitioner should have hired Mr. Kim
`
`at that time. See Paper 25, 1. Patent Owner asserts that this situation is
`
`solely of Petitioner’s making, and, thus, weighs dispositively against
`
`Petitioner’s ability to satisfy the first prong. We disagree. Petitioner sought
`
`the services of a commercial translating service. While we do agree that it
`
`would have been preferable for Petitioner to have considered the availability
`
`of the translator for deposition when it obtained the translation, on these
`
`facts, we find it reasonable that Petitioner would have expected that a
`
`commercial translation service would make the translator available. Upon
`
`being informed to the contrary, Petitioner made efforts to, and was
`
`successful in, obtaining the services of Mr. Kim with time remaining in
`
`Patent Owner’s discovery period.
`
`Patent Owner asserts also that Petitioner’s actions subsequent to
`
`instituting trial were unreasonable, and weighs dispositively against
`
`Petitioner’s ability to meet the first prong, because Petitioner waited two
`
`4
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`months from when it first learned of Patent Owner’s objections to the
`
`translation, to when they requested authorization to file the instant Motion.
`
`See Paper 25, 3–4. While we acknowledge this is a closer issue, we agree
`
`with Petitioner. Fundamentally, Petitioner sought to secure Mr. Wang for a
`
`deposition when Patent Owner specifically identified him as a deponent, and
`
`then secured Mr. Kim’s services once Mr. Wang was determined to be
`
`unavailable for deposition, again, with time remaining in Patent Owner’s
`
`discovery period. Paper 24, 1–2.1
`
`As to the second prong, we determine that granting Petitioner’s
`
`Motion is in the interests of justice. The Zenon reference implicates each
`
`claim for which we instituted trial, making it pivotal to the trial. See Paper
`
`13; see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144, 195 L.
`
`Ed. 2d 423 (2016) (“Thus, in addition to helping resolve concrete patent-
`
`related disputes among parties, inter partes review helps protect the public’s
`
`‘paramount interest in seeing that patent monopolies . . . are kept within their
`
`legitimate scope.’”). Patent Owner is not unduly prejudiced by admitting the
`
`supplemental information, as Exhibit 1007, which Patent Owner has had
`
`access to for the entirety of the proceeding, is substantively unchanged.
`
`Patent Owner has the opportunity to depose Mr. Kim about the substance of
`
`Exhibit 1007 and also Mr. Kim’s own Declaration (Ex. 1017) concerning the
`
`accuracy of that translation. Patent Owner also may supply its own
`
`
`1 The two weeks Patent Owner identifies where Petitioner “proceeded to
`fight the deposition as routine discovery” does weigh against Petitioner. On
`these facts, however, we provide Petitioner the benefit of the doubt that this
`may be an area of Board procedure that lacks clarity.
`
`5
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`translation in support of a position that Mr. Wang’s translation was
`
`inaccurate as part of a Patent Owner Response.
`
`We recognize that the Patent Owner Response is due September 13,
`
`2016. We expect Petitioner to make Mr. Kim immediately available for
`
`deposition to facilitate Patent Owner’s preparing its Response.
`
`
`
`In consideration of the foregoing, it is hereby
`
`ORDERED that Petitioner’s Motion is granted; and
`
`FURTHER ORDERED that Petitioner’s Exhibit 1017 be entered,
`
`unconditionally.
`
`
`
`
`
`6
`
`
`
`IPR2016-00371
`Patent 8,561,619 B1
`
`For PETITIONER:
`S. Art Hasan
`Kyle W. Kellar
`LEWIS ROCA ROTHGERBER CHRISTIE LLP
`ahasan@lrrc.com
`pto@lrrc.com
`
`
`
`For PATENT OWNER:
`Geoffrey Gavin
`George Phillips
`JONES DAY
`ggavin@jonesday.com
`gphillips@jonesday.com
`
`
`7
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